Intellectual Ventures I LLC

Patent Trials and Appeals Board

Jul 22, 2020

IPR2014-00504 (P.T.A.B. Jul. 22, 2020)

Trials@uspto.gov Paper 86
571-272-7822 Entered: July 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MOTOROLA MOBILITY LLC,
Petitioner,

v.

INTELLECTUAL VENTURES II LLC,
Patent Owner.
____________

IPR2014-00504
Patent 7,382,771 B2
____________

Before MICHAEL W. KIM, PATRICK R. SCANLON, and
KRISTINA M. KALAN, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.
DECISION
Denying Petitioner’s Request on Rehearing of
Final Written Decision on Remand
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
Motorola Mobility LLC (“Petitioner”) filed a Revised Petition (Paper
4, “Pet.”)1 requesting inter partes review of claims 1–4, 7, and 18 of U.S.
Patent No. 7,382,771 B2 (Ex. 1001, “the ’771 patent”). We instituted an
inter partes review as to (1) claims 1 and 2 under 35 U.S.C. § 102(e) as
anticipated by Boehm2; (2) claims 1, 3, 4, 7, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Mitchell3 and Boehm; and (3) claims 1–4 and
18 under 35 U.S.C. § 103(a) as unpatentable over Veeck,4 Boehm, and
Mitchell. Paper 12, 20. We did not institute an inter partes review on any
of the other grounds set forth in the Petition. Id. On September 9, 2015, we
issued a Final Written Decision holding that claims 1–4, 7, and 18 were
unpatentable on the instituted grounds. Paper 46 (“Final Dec.”) 20–34, 39;
see also Paper 47 (errata) 1–2.
The Final Written Decision was appealed by Patent Owner to the
United States Court of Appeals for the Federal Circuit. See Paper 49. The
Federal Circuit vacated our determination as to all claims, holding that the
Board had erred in evaluating the evidence of prior conception offered by
Patent Owner, and remanded for further consideration. Intellectual
Ventures II LLC v. Motorola Mobility LLC, 692 F. App’x 626, 629 (Fed.
Cir. 2017) (“Intellectual Ventures II”).

1 Paper 4 is a Revised Petition for inter partes review, filed March 25, 2014.
The original Petition for inter partes review (Paper 1) has been accorded the
filing date of March 10, 2014. Paper 3.
2 US 2004/0085944 A1, published May 6, 2004 (Ex. 1005, “Boehm”).
3 US 7,599,691 B1, issued Oct. 6, 2009 (Ex. 1006, “Mitchell”).
4 US 2005/0039208 A1, published Feb. 17, 2005 (Ex. 1008, “Veeck”).
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On July 31, 2018, we entered an Order that modified the institution
decision to include review of all challenged claims and all grounds presented
in the Petition, in accordance with the U.S. Supreme Court’s decision in SAS
Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). Paper 54, 6. On March 13,
2020, we issued a Final Written Decision on Remand, holding that Petitioner
had not met its burden of showing, by a preponderance of the evidence, that
claims 1–4, 7, and 18 of the ’771 patent were unpatentable as either
anticipated by Boehm, or obvious over certain combinations of Mitchell,
Boehm, Kellerer,5 and Veeck. Paper 84 (“Remand Dec.”).
On April 13, 2020, Petitioner filed a Request for Rehearing of the
Final Written Decision on Remand. Paper 85 (“Req.”). For the reasons that
follow, the Request is denied.
II. STANDARD OF REVIEW
In pertinent part, 37 C.F.R. § 42.71(d) states:
The burden of showing a decision should be modified lies with
the party challenging the decision. The request must specifically
identify all matters the party believes the Board misapprehended
or overlooked, and the place where each matter was previously
addressed in a motion, an opposition, or a reply.
Thus, a request for rehearing is not an opportunity merely to disagree with
the Board’s assessment of the arguments or weighing of the evidence, or to
present new arguments or evidence.

5 Wolfgang Kellerer et al., (Auto) Mobile Communication in a
Heterogeneous and Converged World, IEEE Personal Communications,
Dec. 2001, 41 (Ex. 1007, “Kellerer”).
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III. ANALYSIS
Independent claim 1 of the ’771 patent recites, in pertinent part, a
mobile wireless hot spot system that is “a stand-alone system that enables
client devices configured for short-range, high-speed wireless Internet access
to use said mobile wireless hotspot system to access the Internet without the
need to access an external service controller server” (the “stand-alone
system limitation”). Ex. 1001, 6:24–28.
In the Final Written Decision on Remand, we determined that “under
the rule of reason, . . . the evidence establishes that the inventors conceived
the invention of claim 1 prior to November 4, 2002.” Remand Dec. 39.
Petitioner argues that the Board “misapprehends or overlooks the context
surrounding the inventor testimony and improperly relies on such testimony
for corroboration.” Req. 3–9.
In the Final Written Decision on Remand, we determined that “we are
not persuaded that Kellerer discloses a stand-alone system that enables client
devices to access the Internet without the need to access an external access
controller server.” Remand Dec. 61. Petitioner argues that the Board
misapprehends and overlooks teachings of Kellerer that render a stand-alone
system obvious. Req. 9–13.
We analyze each argument in turn.
A. Conception
1. Context Surrounding Inventor Testimony
Petitioner asserts that the Board wrongly concluded that the evidence
of conception showed the stand-alone system limitation, even though “the
evidence reveals a complete absence of corroboration regarding the key
stand-alone system limitation.” Req. 3–4. Specifically, Petitioner asserts
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that the Board “overlooks the actual teaching of Exhibit 2009 when it credits
LeBlanc’s testimony,” misapprehends or overlooks that Dr. Tewfik’s
testimony “fails as a matter of law to provide independent corroboration,”
and also misapprehends or overlooks that Exhibit 2020 fails to provide
contemporaneous evidence that the MHS1 was a stand-alone system. Req.
4–6.
We are not persuaded by Petitioner that we misapprehended or
overlooked the evidence regarding conception of the stand-alone system
limitation because, as explained below, the Board considered and analyzed
expressly each piece of evidence Petitioner asserts was misapprehended or
overlooked.
First, Petitioner asserts that the Board “overlooks the actual teaching
of Exhibit 2009 when it credits LeBlanc’s testimony.” Req. 4–5. We
disagree because we considered and analyzed expressly the teachings of
Exhibit 2009 in crediting Mr. LeBlanc’s testimony. Remand Dec. 32–34.
We cannot have misapprehended or overlooked that which we analyzed
expressly.
Petitioner asserts that Exhibit 2009 does not disclose whether the
hotspot was internal or external. Req. 4. Petitioner’s assertions are
misplaced because the Board did not rely on Exhibit 2009 for disclosing an
internal or external hotspot. For that, the Board relied on Exhibit 2006.
Remand Dec. 34–35.
Petitioner asserts that Exhibit 2009 is “nothing more than an
incomplete draft with over a dozen sections left blank.” Req. 5 (citing
Remand Dec. 33; Ex. 2009 at 1, 9–14). We are not persuaded that we
misapprehended or overlooked this argument because it was not presented
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prior to Petitioner’s Request for Rehearing. Although Petitioner provides
citations to the record, we do not identify any portions in the record where
this argument appears. See Req. 4 (citing Paper 26 at 1–6; Paper 52 at 2–7).
Accordingly, we are not persuaded that we misapprehended or overlooked
this argument because it was not before us.
In any case, even considering the draft form of Exhibit 2009, we are
unpersuaded that the fact that Exhibit 2009 may be “incomplete” means that
it cannot corroborate the stand-alone system limitation. Regardless of its
completeness, a draft can still corroborate, such as we determined it did here
by providing a comprehensive accounting of the components the MHS1
requires. See Remand Dec. 35–37 (discussing Exhibit 2020’s reference to a
“Mobile HotSpot” device with the same configuration as Exhibit’s 2009’s
MHS1 as supporting the MHS1’s disclosure of the stand-alone system
limitation). If anything, Petitioner appears to be asserting that it should be
accorded little weight. To that end, Petitioner’s assertion is noted and
considered, but does not change the outcome of this case.
Petitioner further asserts that the Board misapprehends or overlooks
that Dr. Tewfik’s testimony is not credible because he has “no personal
knowledge” and “merely parrots the inventor’s claim chart.” Req. 6. We
disagree, because we considered and analyzed expressly Petitioner’s
argument and the basis for Dr. Tewfik’s testimony. Remand Dec. 27, 30.
We determined that Dr. Tewfik’s testimony was credible, in that it was
testimony concerning his opinion with respect to the claim chart, and also
that his testimony was based, at least in part, on his personal experience with
Windows 98 and its functionalities. Id. at 30. Indeed, the Federal Circuit
noted that the rule of reason requires us to consider all pertinent evidence,
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and then noted explicitly that Dr. Tewfik’s testimony was one example of
such pertinent evidence that needed to be considered. See Intellectual
Ventures II, 692 F. App’x at 627–628. For these reasons, we are not
persuaded that we misapprehended or overlooked the credibility of
Dr. Tewfik’s testimony.
Petitioner asserts that the Board misapprehends or overlooks that
Exhibit 2020 does not corroborate that the MHS1 was a stand-alone system.
Req. 5. First, Petitioner argues that the Board misapprehended or
overlooked the fact that Exhibit 2020 is not contemporaneous evidence
because it is dated over a month after Boehm. Req. 5 n.1. We disagree,
because we considered and analyzed expressly the extent to which
Exhibit 2020 serves as corroborating evidence for Mr. LeBlanc’s testimony,
and expressly took into account the date. Remand Dec. 35. Second,
Petitioner argues that the Board misapprehended or overlooked the fact that
Exhibit 2020 is ambiguous as to whether DHCP was implemented internally
or externally. Req. 5 n.1. We disagree, because we considered and analyzed
expressly this ambiguity, and determined the following:
Exhibit 2020’s statement that the Mobile Hotspot assigns users
private IP addresses instead lends credibility to Mr. LeBlanc’s
testimony that the MHS1 did not have the need to access an
external service controller server to provide the DHCP
functionality or to access the Internet. See Ex. 2006 ¶ 15.
Remand. Dec. 37. Therefore, we are not persuaded that we misapprehended
or overlooked Petitioner’s assertion that Exhibit 2020 fails to corroborate the
stand-alone system limitation.
Petitioner requests that the Board reassess its analysis under the rule
of reason. Req. 9. Petitioner’s request is improper and unnecessary,
because the Final Written Decision on Remand employed a rule of reason
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analysis. See, e.g., Remand Dec. 16; see also 37 C.F.R. § 42.71(d) (A
request for rehearing “must specifically identify all matters the [requesting]
party believes the Board misapprehended or overlooked.”). Nonetheless,
even considering Petitioner’s arguments anew, we reach the same
conclusion as in the Final Written Decision on Remand for the reasons that
follow.
Under the rule of reason, “all pertinent evidence is examined in order
to determine whether the inventor’s story is credible.” Fleming v. Escort
Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014) (quoting Sandt Tech., Ltd. v.
Resco Metal & Plastics Corp., 264 F.3d 1344, 1350 (Fed. Cir. 2001)).
However, “[t]he law does not impose an impossible standard of
independence on corroborative evidence by requiring that every point of a
reduction to practice be corroborated by evidence having a source totally
independent of the inventor.” Id. (citing Cooper v. Goldfarb, 154 F.3d 1321,
1331 (Fed.Cir.1998)). Corroborating evidence need not constitute definitive
proof of the inventor’s account or disclose each claim limitation as written.
Intellectual Ventures II, 692 F. App’x at 627 (citing Fleming, 774 F.3d at
1377). Instead, “[t]he focus must be whether the totality of the evidence
makes the inventor’s testimony credible.” Intellectual Ventures II, 692 F.
App’x at 627 (citing Fleming, 774 F.3d at 1377).
To that end, although we stand by our previous analysis in the Final
Written Decision on Remand with respect to the stand-alone system
limitation, we summarize below certain aspects of that analysis for
completeness. Specifically, Mr. LeBlanc testified that “the MHS1 itself
executed the Dynamic Host Configuration Protocol (DHCP) for configuring
client devices to connect with the Internet” and that “[t]he MHS1 also
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performed network address translation using tools and functions included in
Windows 98.” Ex. 2006 ¶ 15. Mr. LeBlanc’s further testified that the
MHS1 did not require an external service controller server to provide the
DHCP functionality or to access the Internet and that “user devices could
connect via WiFi and obtain an IP address via DHCP implemented locally at
the MHS1.” Ex. 2006 ¶¶ 15, 24.
The totality of the evidence, including Exhibit 2009, Dr. Tewfik’s
testimony, and Exhibit 2020, corroborates Mr. LeBlanc’s testimony. For
example, Exhibit 2009 references providing DHCP functionality for client
devices and the MHS1 deploying Windows 98. Ex. 2009 §§ 2.3.4, 2.4.1.1.1.
And Dr. Tewfik testified that Windows 98 provided DHCP functionality and
“managed the connection between the WiFi short-range wireless system and
the long range cellular data connection.” Ex. 2004 ¶ 35; Ex. 1014, 12:17–
13:11. Exhibit 2020 states that the Mobile Hotspot assigns users private IP
addresses. Ex. 2020, 6. This evidence collectively lends credibility to
Mr. LeBlanc’s testimony that the MHS1 did not have the need to access an
external service controller server to provide the DHCP functionality or to
access the Internet. Moreover, we determined that other portions of
Mr. LeBlanc’s testimony was adequately corroborated and credible.
Remand Dec. 28–32, 40. Accordingly, upon reconsideration, we determine,
once again, that the totality of the evidence corroborates sufficiently
Mr. LeBlanc’s testimony with respect to the stand-alone system limitation
under a rule of reason framework.
For the above reasons, we are not persuaded that the Board
misapprehended or overlooked the context surrounding the inventor
testimony.
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2. Reliance on Inventor’s Testimony as Corroboration
Petitioner argues that the Board misapprehends or overlooks
Petitioner’s argument that “Exhibit 2009 says nothing about DHCP being
implemented locally at the MHS1” and thus “improperly relies on [Mr.]
LeBlanc’s own testimony about Exhibit 2009 to determine what the exhibit
purportedly shows.” Req. 8.
We are not persuaded that we misapprehended or overlooked
Petitioner’s argument. We considered and analyzed expressly the extent of
Exhibit 2009’s disclosure, including Petitioner’s argument that Exhibit 2009
“fails to explain that the DHCP process is carried out internally in the
MHS1, without accessing an external DHCP server.” Remand Dec. 33–34.
We cannot have overlooked that which we analyzed expressly. At best, this
assertion challenges the weight to be accorded the above evidence and
testimony. Even when we discount the weight to be accorded Exhibit 2009
in light of Petitioner’s assertions, we remain persuaded that Exhibit 2009
corroborates sufficiently Mr. LeBlanc’s testimony with respect to conception
of the stand-alone system limitation.
Specifically, Mr. LeBlanc testified about the MHS1’s ability to
execute DHCP and perform network address translation using Windows 98
without using an external service controller. See supra § II.A.1.
Mr. LeBlanc cited Exhibit 2009 as evidence of corroboration. Id. (citing Ex.
2009 §§ 2.3.4, 2.4.1.1.1). The relevant inquiry here is not whether Exhibit
2009 discloses explicitly what Mr. LeBlanc asserts is disclosed, but whether
Exhibit 2009 lends sufficient credibility to Mr. LeBlanc’s testimony. To that
end, § 2.3.4 references that DHCP configures client devices to connect to the
Internet. Ex. 2009 § 2.3.4. Moreover, § 2.4.1.1.1 references that the MHS1
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deploys Windows 98. Id. § 2.4.1.1.1. We find that these portions of Exhibit
2009 lend adequate credibility to Mr. LeBlanc’s testimony because they
describe the MHS1 providing Internet access once the DHCP process is
completed, without referencing an external DHCP server. Remand Dec. 34
(citing Ex. 2009 § 2.3.4[3]).
Finally, Petitioner argues that Exhibit 2009 must show that the MHS1
itself executed DHCP. Req. 8–9. Such a requirement is an overly-narrow,
element-focused attack that is inconsistent with the required rule of reason
analysis. See Intellectual Ventures II, 692 F. App’x at 628 (citing
TransWeb, LLC v. 3M Innovative Props. Co., 812 F.3d 1295, 1302 (Fed.
Cir. 2016)). It is unpersuasive for the reasons set forth above.
B. Obviousness
Petitioner argues that the Board misapprehends or overlooks
Kellerer’s teachings with respect to Figures 3 and 4 showing a stand-alone
system. Req. 9–11. Specifically, Petitioner asserts that the Board
misapprehends or overlooks that: (1) Figure 3 teaches server architecture
located inside the car, and (2) Figure 4 shows “all of the components that are
necessary to enable Internet access, including a central control unit, IP
address management, routing, application servers (e.g., e-mail servers), and
network managers provided within the hotspot.” Id. at 10.
We are not persuaded that we misapprehended or overlooked the
teachings of Figures 3 and 4. First, Figure 4 of Kellerer was considered in
the Final Written Decision on Remand. See Remand Dec. 49–50. Second,
although our analysis in the Final Written Decision on Remand of
Petitioner’s assertions regarding Kellerer’s teachings may not have explicitly
mentioned Figures 3 and 4, these teachings were implicitly considered and
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analyzed in our analysis of Kellerer. Specifically, these teachings were
considered because the first and second of the three passages from Kellerer
cited by Petitioner, and expressly addressed in the Final Written Description,
relate to Figures 3 and 4. See Remand Dec. 56–60; Ex. 1007, 45.
Even if we were to have discussed Figures 3 and 4 explicitly, it would
not have changed the outcome of our Decision. In Figure 4, Kellerer shows
a block with a central control unit, address management, routing, an
application server, and network managers. Exhibit 1007, 45. This block
diagram, however, does not specifically address whether or not Internet
access requires an external service controller. Moreover, Petitioner provides
no citations to any passages that describe the functions of the central control
unit, address management, routing, the application server, and the network
managers. See generally Req. 9–13. We are not persuaded that Kellerer
teaches all of the components that are necessary to enable Internet access
based on Figure 4 alone. That these components are located inside the car,
as shown in Figure 3, also does not specifically address whether or not
Internet access requires an external service controller. Accordingly, we are
not persuaded that Figures 3 and 4 render the stand-alone system limitation
obvious.
Petitioner also argues that the Board misapprehends or overlooks that
Kellerer teaches application servers, address management, and a proxy cache
within the hotspot that “are in relevant part identical” to the ’771 patent’s
web server, address management, and local content module within the
hotspot. Req. 11–12 (citing Ex. 1001; Ex. 1003, 79–71; Ex. 1007, Fig. 4,
5–6); Supp. Pet. Reply 13–14 (citing Ex. 1001; Ex. 1003, 79–71; Ex. 1007,
Fig. 4, 5–6). Thus, “[t]o the extent the ’771 Patent describes a stand-alone
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system that enables Internet access without the need to access an external
service controller server, so must Kellerer.” Req. 12; see Supp. Pet.
Reply 14.
In the Final Written Decision on Remand, we considered and
analyzed expressly Kellerer’s teachings regarding application servers, and
were not persuaded that Kellerer’s application servers taught the stand-alone
system limitation. Remand Dec. 57–60. Therefore, we are unpersuaded that
we misapprehended or overlooked Kellerer’s teachings regarding application
servers.
We acknowledge that the Final Written Decision on Remand did not
explicitly discuss Kellerer’s address management and proxy cache, although
like Figures 3 and 4 set forth above, these teachings were implicitly
addressed in the aggregate in our analysis of Kellerer’s system. For
completeness, we explicitly address these teachings now.
Kellerer’s only reference to “[a]ddress management” is in Figure 4.
See generally Exhibit 1007. Kellerer provides no further discussion on what
the “[a]ddress management” block in Figure 4 does. Id. Petitioner provides
no other citations regarding Kellerer’s address management function. See
generally Req. 9–13. We are not persuaded that a passing and generic
reference to “[a]ddress management” is identical to the ’771 patent’s address
management functions such as DHCP. See Ex. 1001, 3:59–4:20, Figs. 2, 4.
Turning to Kellerer’s proxy cache, we agree that it is similar to
the ’771 patent’s local content module. We are not, however, persuaded that
Kellerer’s disclosure of a proxy cache alone supports sufficiently a teaching
of the stand-alone system limitation. Accordingly, we are not persuaded that
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Kellerer teaches a system that is in relevant part identical to the ’771 patent’s
stand-alone system limitation.
Petitioner asserts that “the Board’s analysis of Kellerer is flawed”
because “the Board imagines Kellerer might use an undisclosed external
service controller server even though [Dr. Roy] testified one is not needed.”
Req. 12–13 (citing Ex. 2004, 20:9–21). The assertion is misplaced because
we considered and analyzed expressly the cited testimony from Dr. Roy and
his basis for the conclusion that Kellerer’s email server did not need to
access an external service controller. Remand Dec. 58–60. Ultimately, we
were unpersuaded because we instead credited Dr. Tewfik’s opposing
testimony in determining that Kellerer’s e-mail server did not support the
stand-alone system limitation. Id. at 60.
To the extent Petitioner relies on Dr. Roy’s testimony for the fact that
an external service controller server is not needed to support its arguments
regarding Figures 3 and 4, and the gateway’s address management and
proxy cache, we note that the cited portions of Dr. Roy’s testimony only
addresses email servers, and do not address any other aspect of Figures 3
and 4, address management, or a proxy cache. Therefore, we are not
persuaded that we misapprehended or overlooked Dr. Roy’s testimony
regarding external service controller server arguments that were never made.
Petitioner argues that “[e]ven if, as the Board concludes, a person of
ordinary skill in the art would have known that Kellerer’s email server could
have been implemented either with or without an external service controller
server, those are nothing more than predictable variations.” Req. 13.
Petitioner, however, fails to provide a citation to the record where this
argument was timely raised. See id. Accordingly, we are not persuaded that
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we misapprehended or overlooked this argument because it was not before
us prior to Petitioner’s Request for Rehearing.
For the above reasons, we are not persuaded that the Board
misapprehended or overlooked teachings in Kellerer that Petitioner argues
would have rendered the challenged claims obvious.
III. CONCLUSION
Petitioner’s Request for Rehearing is denied.

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For PETITIONER:
John C. Alemanni
David A. Reed
Michael M. Morlock
Courtney S. Dabbiere
KILPATRICK TOWNSEND & STOCKETON LLP
jalemanni@kilpatricktownsend.com
dreed@kilpatricktownsend.com
mmorlock@kilpatricktownsend.com
cdabbiere@kilpatricktownsend.com

For PATENT OWNER:
Ted M. Cannon
Bridget A. Smith
Curtis R. Huffmire
Derek Bayles
John R. King
KNOBBE, MARTENS, OLSON & BEAR, LLP
2tmc@knobbe.com
2bzs@knobbe.com
2crh@knobbe.com
2drb@knobbe.com
2jrk@knobbe.com

James Hietala
Russ Rigby
INTELLECTUAL VENTURES
jhietala@intven.com
rrigby@intven.com